Supercell Oy v. GREE, Inc.
`PGR2018-00055
`U.S. Patent No. 9,687,744
`
`June 27, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1014
`
`
`PGR2018-00055
`U.S. Patent No. 9,687,744
`
`June 27, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1014
`
`
`
`PGR2018-00055
`U.S. Patent No. 9,687,744 (“’744 patent”)
` “[W]e are persuaded by Petitioner that
`the claims are directed to controlling an
`effect of attack, according to a
`difference in parameter value between
`two characters and to a number of
`attacks within a predetermined time by
`any characters in the group.
`Decision Granting Institution, p. 11.
` “[W]e are persuaded by Petitioner that
`additional elements in claims 1–12 of
`the ’744 patent do not transform the
`abstract idea into patent-eligible subject
`matter because the claimed
`improvements identified by Patent
`Owner do not improve the
`technological field.”
`Decision Granting Institution, p. 15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`Exhibit 1014
`
`
`
`Step One: Claims are directed to an abstract idea
`
`The claims are directed on the
`abstract idea of:
`
`“controlling an effect of attack
`according to a difference in
`parameter value between two
`characters and to a number of
`attacks within a predetermined
`time.”
`
`Reply, p 3.
`
`Ex. 1001, FIG. 6; Petition, p. 8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`Exhibit 1014
`
`
`
`Step One: Claims are directed to an abstract idea
`
`1. A method for providing a battle game to
`each of a plurality of client devices via a
`network, comprising:
`storing, by a server device, for each of a
`plurality of characters, a parameter that
`serves as an indicator for developing the
`battle game; and
`controlling, by a processor of the server
`device, an effect of attack by a group,
`according to a difference in the parameter
`between two characters belonging to the
`same group and successive in attack order
`and to a number of attacks within a
`predetermined time by any characters in the
`group.
`
`Ex. 1001, Claim 1, 9, FIG. 6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`Exhibit 1014
`
`
`
`Step One: Claims are directed to an abstract idea
`
`The ‘744 patent is abstract because the claims:
`
`Prong One:
`
`(1) Recite only result-oriented functions without a non-abstract means of
`achieving those results
`
`(2) Recite a “mathematical concept”
`
`(3) Recite a “method of managing a game”
`
`Prong Two:
`
`(4) Provide no improvement in computer functionality
`
`(5) Recite no improvement in graphical user interfaces
`Petition, p. 32-38; Reply, p. 1-11.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`Exhibit 1014
`
`
`
`(1) The Claims Recite Only Result-Oriented Functions
`
`1. A method for providing a battle game to
`each of a plurality of client devices via a
`network, comprising:
`storing, by a server device, for each of a
`plurality of characters, a parameter that
`serves as an indicator for developing the
`battle game; and
`controlling, by a processor of the server
`device, an effect of attack by a group,
`according to a difference in the parameter
`between two characters belonging to the
`same group and successive in attack order
`and to a number of attacks within a
`predetermined time by any characters in the
`group.
`
`Ex. 1001, Claim 1, FIG. 6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`Exhibit 1014
`
`
`
`(1) The Claims Recite Only Result-Oriented Functions
`
`•
`
`•
`
`•
`
`In re TLI Commc’ns LLC, 823 F.3d 607, (Fed. Cir. 2016
`(claims abstract where “no restriction on how the result
`is accomplished”)
`
`Two-Way Media Ltd. v. Comcast Cable Commc’n, LLC,
`874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claims directed
`to generalized steps to be performed on a computer
`using conventional computer activity are not patent
`eligible”);
`
`Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253
`(Fed. Cir. 2016) (claim abstract that only claimed “the
`function of wirelessly communicating regional broadcast
`content to an out-of-region recipient, not a particular
`way of performing that function.”)
`
`Ex. 1001, FIG. 6;
`Petition, p. 34-42.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`Exhibit 1014
`
`
`
`(1) The Claims Recite Only Result-Oriented Functions
`
`• No detailed rules or steps to explain
`how the claimed functions are
`performed
`• No limitations as to how the
`parameters are calculated, how the
`difference in parameter or number of
`attacks impacts control of the effect
`• No indication of how the difference in
`parameter and number of attacks may
`interact in their impact on the control
`of the effect
`
`Ex. 1001, FIG. 6;
`Petition, p. 32-38;
`Reply, p. 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`Exhibit 1014
`
`
`
`(1) The Claims Recite Only Result-Oriented Functions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1001, FIGs. 2 & 6;
`Petition, p. 11-12, 32-38;
`Reply, p. 3.
`
`9
`
`Exhibit 1014
`
`
`
`(2) Prong 1: Purely Mathematical Concept
`
`The claims are directed to a purely mathematical concept:
`controlling, by a processor of the server
`device, an effect of attack by a group,
`according to:
`
`(1) a difference in the parameter between
`two characters belonging to the same
`group and successive in attack order
`
`(2) a number of attacks within a
`predetermined time by any characters
`in the group.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`Exhibit 1014
`
`
`
`(2) Prong 1: Purely Mathematical Concept
`
`PO’s expert admits the claim recites a mathematical function:
`
`PO also expressly refers to the claims as “a calculation”:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`Exhibit 1014
`
`
`
`(3) Prong 1: Method of Conducting a Game
`
`Certain methods of organizing human activity:
`
`“Applicants' claims, directed to rules for conducting a wagering
`game” are abstract. In re Smith, 815 F.3d 816, 818 (Fed Cir. 2016)
`
`Ex. 2006, 2019 Revised Patent Subject Matter Eligibility Guidance, p. 10 n.13; Reply, p. 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`Exhibit 1014
`
`
`
`(3) Prong 1: Method of Conducting a Game
`
`In re Smith, 815 F.3d 816, 818 (Fed Cir. 2016)
`• Method of conducting a wagering game using a deck of cards
`
`Planet Bingo LLC v. VKGS LLC, 576 Fed. App’x. 1005, 1007-08 (Fed. Cir. 2014)
`• Method and system for conducting a game of bingo
`
`In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018)
`• Method of playing a dice game
`
`Ex. 2006, 2019 Revised Patent Subject Matter Eligibility Guidance, p. 10 n.13; Reply, p. 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`Exhibit 1014
`
`
`
`(3) Prong 1: Method of Conducting a Game
`
`The claims are directed to a rules for a game:
`1. A method for providing a battle game to each
`of a plurality of client devices via a network,
`comprising:
`controlling, by a processor of the server
`device, an effect of attack by a group,
`according to:
`
`(1) a difference in the parameter between
`two characters belonging to the same
`group and successive in attack order
`
`(2) a number of attacks within a
`predetermined time by any characters in
`the group.
`
`Ex. 2006, 2019 Revised Patent Subject Matter Eligibility Guidance, p. 10 n.13; Reply, p. 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`Exhibit 1014
`
`
`
`(3) Prong 1: Method of Conducting a Game
`
`PO admits, as it must, that the claims are directed to a
`modification to a known rule for battle games:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, p. 5;
`POR, p. 3, 27.
`
`15
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
` Prong 2 evaluates whether the claim as a whole integrates the
`recited judicial exception into a practical application of the exception.
`
`Prong 2 Exemplary Consideration:
`
` an additional element reflects an improvement in the functioning of a computer, or
`an improvement to other technology or technical field;
`
`Result
`Based
`
`Reply, p. 6-10; Ex. 1012.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299, 1314-15 (Fed. Cir. 2016)
`• The patent “is focused on a specific asserted
`improvement in computer animation, i.e.,
`the automatic use of rules of a particular
`type.”
`“The claimed process uses a combined order
`of specific rules that renders information
`into a specific format that is then used and
`applied to create desired results: a sequence
`of synchronized, animated characters.”
`
`•
`
`Petition, p. 32-37; Reply, p. 8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`Compare McRO
`A method for automatically animating lip synchronization and facial expression
`of three-dimensional characters comprising:
`
`obtaining a first set of rules that define output morph weight set stream as
`a function of phoneme sequence and time of said phoneme sequence;
`
`obtaining a timed data file of phonemes having a plurality of sub-sequences;
`
`generating an intermediate stream of output morph weight sets and a
`plurality of transition parameters between two adjacent morph weight sets
`by evaluating said plurality of sub-sequences against said first set of rules;
`
`generating a final stream of output morph weight sets at a desired frame rate
`from said intermediate stream of output morph weight sets and said
`plurality of transition parameters; and
`
`applying said final stream of output morph weight sets to a sequence of
`animated characters to produce lip synchronization and facial expression
`control of said animated characters.
`Petition, p. 32-37; Reply, p. 8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`With ‘744 Patent Claim 1:
`1. A method for providing a battle game to each of a plurality of
`client devices via a network, comprising:
`
`storing, by a server device, for each of a plurality of characters,
`a parameter that serves as an indicator for developing the
`battle game; and
`
`controlling, by a processor of the server device, an effect of
`attack by a group, according to a difference in the
`parameter between two characters belonging to the same
`group and successive in attack order and to a number of
`attacks within a predetermined time by any characters in
`the group.
`
`Petition, p. 32-37; Reply, p. 8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-
`15 (Fed. Cir. 2016) highlights the abstract quality of the claims:
`• PO’s expert admitted that the claims are not directed to a
`specific result, just the broad application of two factors:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`Reply, p. 10;
`Ex. 1011, 62:17-19.
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`•
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
`Cir. 2014) does not apply to the ‘744 patent:
`In DDR, the patent recited a specific way to automate
`the creation of a composite web page, and therefore
`“provided a solution necessarily rooted in computer
`technology in order to overcome a problem specifically
`arising in computer networks.”
`
`• The claims were inventive because they “specify how
`interactions with the Internet are manipulated to yield
`a desired result—a result that overrides the routine and
`conventional sequence of events ordinarily triggered by
`the click of a hyperlink.”
`
`Reply, p. 7;
`Ex. 1011, 30:4-10.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`PO’s expert admits the ‘744 patent is directed to a social
`problem, not a technical one:
`
`Reply, p. 7;
`Ex. 1011, 30:4-10.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`PO admits, as it must, that “combos” were a known
`game mechanic:
`
`POR, p. 45.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`PO’s expert admits the issue addressed by the ‘744 patent and
`the type of parameters used were found in pre-existing games:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, p. 7;
`Ex. 1011, 38:4-22.
`
`24
`
`Exhibit 1014
`
`
`
`(4) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`Summary:
`The ‘744 Patent Claims Recite No Improvement in
`Computer Functionality
`The claims recite a known type of battle game
`
`The claims recite a known presentation processing
`effect or “game mechanic” known as a “combo”
`The “combo” is based on known parameters
`
`The claims do not recite a specific result
`The “combo” is effected on generic hardware
`
`The claims are directed to “motivation” not a
`technical problem
`
`Admissions/References
`
`Ex. 1001, at 1:26-32;
`POR, p. 3.
`Ex. 1001, 1:21-49;
`POR, p. 3, 27, 45.
`Ex. 1001, 1:21-49
`Ex. 1011, 38:4-22.
`Ex. 1011, 62:17-19.
`Ex. 1001, 6:65-7:17;
`POR, p. 32
`Reply, p. 7;
`Ex. 1011, 38:4-22
`Petition, p. 32-37; Reply, p. 8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`Exhibit 1014
`
`
`
`(5) No Improvement in Graphical User Interface Technology
`Prong 2: No Practical Application
`
`PO’s caselaw is inapposite:
`• Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)
`Improved the efficient functioning of a computer by reciting “a particular
`•
`manner of summarizing and presenting information in electronic
`devices.”
`• Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
`the claims recited “recited “a specific, structured graphical user interface
`•
`paired with a prescribed functionality directly related to the graphical
`user interface's structure that is addressed to and resolves a specifically
`identified problem in the prior state of the art.” Id. at 1004.
`• Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018)
`• The claims recited “a specific structure (i.e., notebook tabs) within a
`particular spreadsheet display that performs a specific function (i.e.,
`navigating within a three-dimensional spreadsheet),” which provided a
`specific technological solution to “a known technological problem in
`computers.” Id. at 1009.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, p. 6, 10-11.
`
`26
`
`Exhibit 1014
`
`
`
`Step Two: No Inventive concept
`
` The ‘744 patent admits that the claims recite only conventional computer
`equipment performing ordinary tasks:
`• “server device”
`• “a host computer with high operation processing capacity”
`• or a “general-purpose communication terminal device.”
`Ex. 1001, 2:44-48; Reply, p. 13.
`
`• “client device”
`• “a general-purpose communication terminal device”
`Ex. 1001, 2:51; Reply, p. 13.
`
`• Examples of the general purpose client and server devices include
`“a desktop PC, a notebook PC, a tablet PC, a laptop PC, and a
`mobile phone”
`Ex. 1001, 2:64-65; Reply, p. 13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`Exhibit 1014
`
`
`
`Step Two: No Inventive concept
`
` Federal Circuit precedent explains that the functions performed by the generic
`hardware are routine and non-inventive:
`• “storing” & “receiving”
`• See, e.g., Smartflash LLC v. Apple Inc., 680 F. App’x 977, 983 (Fed. Cir.
`2017)
`• “controlling . . . an effect of attack, according to a difference in the
`parameter between two characters . . . and to a number of attacks
`within a predetermined time”
`• See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355
`(Fed. Cir. 2016) (“Merely requiring the selection and manipulation of
`information . . . by itself does not transform the otherwise abstract
`processes . . .”)
`
`Ex. 1001, 2:64-65; Reply, p. 13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`Exhibit 1014
`
`
`
`Step Two: No Inventive concept
`
` The “ordered combination” of the limitations does not transform the claims
`into a patent eligible invention.
` Without the limitations inherent to the abstract idea, the claims recite only
`generic computer functions:
`1. A method for providing a battle game to each of a plurality of client
`devices via a network, comprising:
`storing, by a server device, for each of a plurality of characters, a
`parameter that serves as an indicator for developing the battle game;
`and
`controlling, by a processor of the server device, an effect of attack by a
`group, according to a difference in the parameter between two
`characters belonging to the same group and successive in attack
`order and to a number of attacks within a predetermined time by any
`characters in the group.
`
`Ex. 1001, Claim 1; Petition, p. 45.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`Exhibit 1014
`
`
`
`Step Two: No Inventive concept
`
`PO’s expert admits using “parameters” to determine the result of a
`battle was well-understood, routine, and conventional:
`
`Cf. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed Cir. 2016).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, p. 7;
`Ex. 1011, 38:4-22.
`
`30
`
`Exhibit 1014
`
`
`
`Step Two: No Inventive concept
`
`The claims do not capture the purported invention.
`To address the problem of “motivation” of low level players to participate in
`the game, the specification purports to disclose a method for increasing an
`effect of attack by a group:
`
`Reply, p. 13;
`Ex. 1001, 1:64-2:10, 3:44-4:2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`Exhibit 1014
`
`
`
`Step Two: No Inventive concept
`
`PO’s expert admits the independent claims are silent as to how
`any difference in parameter value impacts the “effect of attack by
`a group”:
`
`Reply, p. 13;
`Ex. 1011, 62:17-19.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`Exhibit 1014
`
`
`
`Step Two: No Inventive concept
`
`PO’s expert admits the claims may be entirely unrelated to player
`proficiency:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, p. 13;
`Ex. 1011, 32:7-21; 65:9-12
`
`33
`
`Exhibit 1014
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
`
` Claims 2 & 10:
`performing, by the processor of the
`server device, presentation
`processing of increasing the effect of
`attack by the group more when the
`difference in the parameter between
`the two characters successive in
`attack order is large.”
`
` Claim 6 recites displaying the same:
`wherein displaying, by the
`processor, comprises presentation
`processing of increasing the effect of
`attack by the group more when the
`difference in the parameter between
`the two characters successive in
`attack order is large.
`
` Recite no limitations with respect to
`how that presentation processing is
`performed or how it is determined
`whether the difference between the
`two parameter values is large.
` Does not necessarily capture
`purported “advance”
`
`Ex. 1001, Claim 2, 6, 10; Petition, p.
`47-48.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`Exhibit 1014
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
`
` Claims 3 & 11:
`“performing, by the processor of the
`server device, presentation
`processing of increasing the effect of
`attack by the group more when the
`number of successive attacks by a
`plurality of characters belonging to
`the same group is larger.”
`
` Claim 7 recites displaying the same:
`wherein displaying, by the
`processor, comprises
`presentation processing of
`increasing the effect of attack by the
`group more when the number of
`successive attacks by a plurality of
`characters belonging to the same
`group is larger.
`
` Does not capture purported
`“advance” – The number of attacks is
`unrelated to player proficiency.
`
`Ex. 1001, Claim 2; Petition, p. 48-50.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`Exhibit 1014
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
`
` Claims 4, 8, & 12:
`The method according to claim 1 [5
`or 9], wherein
`the parameter indicates any of a
`degree of proficiency in the battle
`game, a reward acquired in the
`battle game, and a time elapsed
`from a date of participation in the
`battle game
`
` Does not necessarily capture
`purported “advance”:
`• Rewards acquired and time
`elapsed from a date of
`participation in a battle game are
`unrelated to player proficiency.
`
` The three parameter categories
`recited in this claim provide no
`additional clarity as to how the effect
`of attack is controlled beyond the
`generalized steps recited in the
`independent claim.
`
`Ex. 1001, Claim 4, 8, 12; Petition, p.
`50-51.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`Exhibit 1014
`
`
`
`PO’s Expert Testimony Is Entitled to No Weight
`
` FRE 702
`• An expert witness must be qualified by
`knowledge, skill, experience, training, or
`education
`• Mr. Crane, by his own admission, lacks any of
`the above.
` Trial Practice Guide, p. 3 (2018)
`• A witness not “qualified in the pertinent art”
`may not testify as to “underlying technical
`questions” regarding the asserted grounds of
`invalidity.
`
`Reply, p. 17.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`Exhibit 1014
`
`
`
`PO’s Expert Testimony Is Entitled to No Weight
` Mr. Crane concluded the ‘744 patent provides an inventive game
`mechanic for “multiplayer online battle games.”
`
` Mr. Crane has no professional experience with battle-type games:
`
`Ex. 1011, 68:19-21;
`Reply, p. 17-18.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`Exhibit 1014
`
`
`
`PO’s Expert Testimony Is Entitled to No Weight
` Mr. Crane concluded the ‘744 patent provides an inventive game
`mechanic for “multiplayer online battle games.”
`
` Mr. Crane has very little personal or leisure experience with battle-type
`games:
`
`Ex. 1011, 70:10-25
`Reply, p. 17-18.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`The Specification Fails to Provide Adequate Written Description for “controlling .
`. . an effect of an attack.”
` The specification provides support only for “increasing” the effect of an attack,
`not the broader “controlling” the effect of the attack, as recited in the claims.
` Original claims may lack written description when the claims define the
`invention in functional language specifying a desired result but the specification
`does not sufficiently describe how the function is performed or the result is
`achieved. See Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-83 (Fed. Cir.
`2015) (finding it insufficient that a POSITA could write a program to achieve the claimed function;
`the specification must explain how the inventor intends to achieve the function).
`
` The claims recite the purely functional language of “controlling…an effect of an
`attack,” without ever providing disclosure of how that function is performed.
`• Even for the narrower “increasing,” the specification does not explain how the effect
`of the attack is increased, just that it is increased “more” when the parameter
`difference is “larger.”
`
`Reply, 19-20. Petition, 54-56. Ex. 1001, 5:62-6:4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`The Specification Fails to Provide Adequate Written Description for “controlling .
`. . an effect of an attack.”
` Even for the narrower “increasing,” the specification does not explain how the
`effect of the attack is increased, just that it is increased “more” when the
`parameter difference is “larger.”
`
` PO’s expert: “an effect of attack by a group” is the result of the battle, with
`numerous possible options:
`• “[i]ndividual players on each team can have their character damaged.
`Individual characters in the group . . .provide damage to opposing players.
`•
`Individual characters in a group can be killed in the battle.”
`•
`
` Nowhere does the specification describe which of these possible results are
`“increased.”
`
`Reply, 19-20. Petition, 54-56. Ex. 1011, 56:13-23.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`The Specification Fails to Provide Adequate Written Description for “controlling .
`. . an effect of an attack.”
` The written description analysis calls for a comparison between the scope of
`the claim and the scope of the description. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345
`(Fed. Cir. 2000).
`• PO argues contra in it’s Sur-reply.
`
` The scope of the ’744 claims is “controlling . . . an effect of an attack.”
`
` PO admits that the scope of the claims and the scope of the description do not
`align.
`• PO admits that “[e]ach of the[] examples disclosed in the Specification discuss
`affecting the outcome of an attack in the form of an increase.”
`• But PO’s expert argues a POSA would know that “a negative increase or no change”
`also are possible forms of control.
`
`Reply, 20-21. Ex. 2002, ¶35 (emphasis added); ¶47. PO’s Sur-reply, 23-24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` The Specification Fails to Provide Adequate Written Description for
`“controlling…an effect of an attack according to a difference in the parameter
`between two characters.”
`
` The term “parameter” is a variable that serves as an indicator for developing
`the battle game, with possible measures including at least: proficiency, reward
`acquisition, recovery ability, and elapsed time from participation.
`• PO argues that claim 1 is not limited to these measures recited in claim 4.
`
` The specification provides no written description support for:
`• any measures beyond the four identified.
`• When or under what circumstances each of these different possible measures are
`used for the parameter, or how each of them provides a “different way to reduce the
`technical barrier.”
`
`Reply, p. 21-22; POR, p. 15-17; Petition, p. 23-24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` The Specification Fails to Provide Adequate Written Description for
`“controlling…an effect of an attack according to a difference in the parameter
`between two characters.”
`
` PO’s expert admits such disclosure is lacking, but argues that it is within
`the skill of a POSA, and thus disclosure is unnecessary.
`• “It would be well within the skill of a POSA to write a game program . . . that
`utilizes any or all of these measures as the ‘parameter’ to practice the
`claimed invention.”
` However, that a POSA could write a program to achieve the
`claimed function is not sufficient. The specification must explain
`how the inventor intends to achieve the function. Vasudevan Software,
`782 F.3d at 681-83.
`
`Reply, 21-22. POR, 15-17. Petition, 23-24. Ex. 2002, ¶33, ¶38, ¶49.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` The Specification Fails to Provide Adequate Written Description for
`“controlling . . . an effect of an attack according to a difference in the
`parameter . . . and to a number of attacks within a predetermined time.”
`• This limitation requires that the controlling is “according to” both the difference in
`the parameter and the number of attacks within the predetermined time.
`• The specification provides no written description support for how these two aspects
`work together to contribute to the controlling function, nor the weight afforded each
`variable has in any potential calculation.
`• What if the difference between the two characters’ parameters is large, but the
`number of attacks within the predetermined time is small?
`
` PO’s expert couldn’t explain this situation: “whether a larger one [difference]
`has a larger effect or a smaller one [difference] has a smaller effect” and noted
`“it doesn't specify” whether number of attacks in predetermined time has to be
`high or low.
`
`Reply, 22-23. POR, 17-18. Petition, 23-24. Ex. 1011, 43:8-49:22, 62:17-19; 60:4-62:23, 83:1-11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` The Specification Fails to Provide Adequate Written Description for
`“controlling . . . an effect of an attack according to a difference in the
`parameter . . . and to a number of attacks within a predetermined time.”
`
` PO again wrongly argues such a teaching is unnecessary: “Neither would a POSA
`need specific examples of values in the specification to understand how to
`affect the outcome of an attack based upon these properties.”
`
` Whether a POSA could write a program to achieve the claimed function is not
`sufficient; the specification must explain how the inventor intends to achieve
`the function. Vasudevan Software, 782 F.3d at 681-83.
`
` The specification provides no instruction for how the difference in the
`parameter and the number of attacks within a predetermined time work
`together or are weighted to contribute to the controlling function.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 22-23. Ex. 2002, ¶36.
`
`46
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` Claim 5 Lacks Written Description Support
`
` Claim 5 recites a similar limitation, but uses “controlled in accordance
`with” instead of “controlled…according to.”
`• There is no substantive difference between “controlling according to” and
`“controlled in accordance with.”
`
` Thus, the above arguments regarding claims 1 and 9 and also apply to
`the similar language in claim 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 23-24
`
`47
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
` “Controlling…an effect of an attack according to a difference in the
`parameter between two characters” is Indefinite
`
` A claim is indefinite if its language “might mean several different things and no
`informed and confident choice is available among the contending definitions.”
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.2d 1336, 1371 (Fed. Cir. 2015)(emphasis added).
` “Parameter,” according to PO, could mean at least four different things,
`each “provid[ing] a different way to reduce the technical barrier for new
`players,” and the independent claims are alleged to be not restricted
`even to those four things.
`
` There is no way for the reader to know which of the suggested
`alternative definitions applies
`• This uncertainty dooms the claims as indefinite
`
`Reply, 24-25. POR, 14-17. Ex. 1011, 16:13-17:25.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`Exhibit 1014
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
` “Controlling…an effect of an attack according to a difference in the
`parameter between two characters . . . and to a number of attacks
`within a predetermined time” is Indefinite
`
` The specification provides no guidance as to how the difference in
`the parameter and the number of attacks together contribute to
`the recited “controlling,” and does not elucidate how these factors
`each might be weighted “according to” both of them.
`
` This uncertainty dooms the claims as indefinite, since there is no way for
`the reader to know how each factor contributes to controlling the effect
`of the attack. Packard, 751 F.3d at 1310.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 25.
`
`49
`
`Exhibit 1014
`
`
`
`Expert Testimony Does Not Save Claims 1-12 From Indefiniteness
` PO’s expert admits on several occasions that the specification lacks
`the details necessary to render the claims definite, but argues that
`it is within the skill of a POSA to fill in the gaps.
`
` However, the Federal Circuit has held “[t]he internal coherence
`and context assessment of the patent, and whether it conveys
`claim meaning with reasonable certainty, are questions of law . . .
`[PO] cannot transform legal analysis about the meaning or
`significance of the intrinsic evidence into a factual question simply
`by having an expert testify on it.” Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335, 1342 (Fed. Cir. 2015).
`
`Reply, 25-26. Ex. 2002, ¶¶33, 35, 36, 38, 47, 49.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`Exhibit 1014
`
`
`
`Motion to Amend – PO Has Failed to Meet Its Burden of Production
`
` 37 C.F.R. § 42.221
`• It is PO’s burden to set forth in the motion to amend itself, “written
`description support for each proposed substitute claim, and not just the
`features added by the amendment.”
`• Western Digital Corp. v. SPEX Tech., IPR2018-00082, Paper 13, p. 7-8
`(P.T.A.B. Apr. 25, 2018) (citing 37 C.F.R. 42.121(b)).
`
` PO only set forth such description for the “additional limitations.”
`
`Motion to Amend, p. 5; Sur-Reply, p. 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`Exhibit 1014
`
`
`
`Motion to Amend – PO Has Failed to Meet Its Burden of Production
`
` In a belated attempt to remedy this deficiency, PO cites to whole portions of
`the specification, without analysis:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`MTA Reply, p. 2-3;
`Sur-Reply, p. 4.
`
`52
`
`Exhibit 1014
`
`
`
`Motion to Amend – PO Has Failed to Meet Its Burden of Production
`
` Such block citations, without explanation, are insufficient to carry PO’s burden
`of production.
`• See, e.g., Cisco Systems, Inc. v. Focal IP, LLP, IPR2016-01254, Paper 56, p. 93
`(P
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
